On January 31, 2017, in Georgetown Rail Equipment Company v Rail Radar Inc, 2018 FC 70, the Federal Court (Court) held that Georgetown’s Canadian Patent Nos. 2,572,082 and 2,766,249 (collectively, Patents) are valid and that the defendant, Tetra Tech EBA Inc (Tetra), infringed both Patents.

Georgetown designs, develops and markets automated railway inspection systems. Their machine vision based railway inspection technology was the subject of the Patents. Tetra, a competitor of Georgetown, markets a similar technology.

Tetra alleged that the Patents were invalid for being obvious. At trial, the parties agreed that machine vision and the techniques used were available and commonly employed to examine height differences and inspect surfaces. Tetra claimed that it would have been obvious for a person of ordinary skill in the art to use these techniques in the context of railway inspection. However, none of the prior art was concerned with the specific problems addressed by Georgetown in the Patents.

The Court was not persuaded by Tetra’s argument, noting that Tetra’s challenge to the validity of the Patents amounted to “breaking the inventions down into their constituent parts, demonstrating that the parts were individually known, and then asserting that the combination was obvious”. The Court found that Tetra had failed to establish obviousness of the inventions claimed as of the priority dates of the Patents because there was no suggestion to combine or otherwise apply the specific techniques found in the prior art to the problems addressed in the Patents.

With respect to infringement, the Court found that all of the essential elements of the asserted claims were found in Tetra’s technology. By selling its hardware, licensing its computer software, and analyzing related images, Tetra infringed both Patents.

Summary By: Jae Morris

 

E-TIPS® ISSUE

18 03 07